DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 1, 2, 5, 6 are objected to because of the following informalities:
All abbreviations, symbols, acronyms, functional designations, sigla, letter combinations, code names, initialisms, nicknames, mnemonic devices, project names, alphabetical contractions and general slang must be positively defined and identified in the claims.
Appropriate correction is required.
Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. As a general matter, grammar and the plain meaning of terms understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP § 2111.01 for more information on the plain meaning of claim language. Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect:
(A) statements of intended use or field of use, including statements of purpose or intended use in the preamble,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" or "whereby" clauses,
(D) contingent limitations,
(E) printed matter, or
(F) terms with associated functional language.
This list of examples is not intended to be exhaustive. The determination of whether particular language is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002).
“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (footnote omitted). Claim limitations directed to the content of information are not entitled to patentable weight unless that information has a "functional relationship" to its substrate. As a general proposition, the Examiner need not give patentable weight to non-functional descriptive material absent a new and nonobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of Patent Examining Procedure (MPEP) § 2111.05 (9th ed. Rev. 08.2017, Jan. 2018). In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential), the Board held that the nature of the information being manipulated by the computer should not be given patentable weight absent evidence that the information is functionally related to the process “by changing the efficiency or accuracy or any other characteristic” of the steps. See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non-precedential) (holding “wellness-related” data stored in a database and communicated over a network was non-functional descriptive material as claimed because the data “does not functionally change” the system).
Under the broadest reasonable interpretation standard, the “or” language, the condition would also not occur and the step or function claimed would never be realized, hence the claim does not require to perform the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011, 2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)( "optional elements do not narrow the claim because they can always be omitted”). “Or” conditions are not limitations against which prior art must be found. Under the broadest scenario, the steps or functions dependent on the “or” condition would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
A statement of intended use, as the name suggests, describes a manner in which a claimed invention may be used, but does not limit the claim and need not be practiced. If the applicant wishes to limit the claims to an intended use, the claims should positively recite those features and make clear that they are limiting. Claims that use this sort of language do not clearly indicate which meaning is intended. C.R. Bard, Inc. v. M3 Systems, Inc. 157 F.3d 1340, 1348-49 (Fed. Cir. 1998), Ex parte Kearney, 2012 Pat. App. LEXIS 2675 at 1 (BPAI 2012), Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claims 2 and 6, the term “a NAS security context” is confusing since the parent claims also state “a NAS security context”. Are there single and same or second and different NAS security context?
Claims 1 and 6 recite the limitation "the AS security context". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 4, 5, 6, 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication 2016/0374104 (Watfa, et al) in view of “Key Hierarchy When Using UP Security Function” ZTE, 3GPP TSG A WG# (Security) Meeting #87, May 19, 2017 or KR 10-2017-0038096.
Watfa, et al discloses a method performed by a user equipment (figure 1A, #102a-d) configured for use in a wireless communication system (#100). The wireless communication system comprises (#100) a core network (#106, 107, 109) and a radio access network (#103, 104, 105, 114a). The method comprising during or in association with a handover procedure for handover of the user equipment (#102a-d) receiving signaling from radio access network equipment (#103, 104, 105, 114a) indicating that a NAS security context and the AS security context has changed (¶114-150, claims 13, 18). Watfa, et al does not disclose a NAS security context on which the AS security context is based. ZTE (figure 5.1.4.x.2.2-1, section 5.1.4.X.2.2) or KR 10-2017-0038096 (The MME 810 may send a NAS Secure Mode Command (SMC) message 1012 to the UE 802 to activate the AS security prior to establishing certain radio bearers. The UE 802 responds by sending a "NAS security mode complete" message 1014 to the MME 810 and the MME 810 signals the "S1AP initial context setup" message 1016 to the eNodeB 808 . S1AP provides a signaling service between E-UTRAN 104 and Evolved Packet Core (EPC) 110 (see FIG. 1). The eNodeB 808 may then send an RRC SMC message 1018 to the UE 802 and the UE 802 responds with a "RRC secure mode complete" message 1020 when ready.)teaches the use of a NAS security context on which the AS security context is based for the purpose of establishing a connection with a serving network, sending an encrypted authentication credential to the serving network, the randomly selected key including a randomly selected key encryption key. Hence, it whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains to incorporate the use of a NAS security context on which the AS security context is based for the purpose of establishing a connection with a serving network, sending an encrypted authentication credential to the serving network, the randomly selected key including a randomly selected key encryption key as taught by KR 10-2017-0038096 or ZTE in the method performed by a user equipment of Watfa, et al in order to the keys in the non-access stratum (NAS) security mode configuration (NAS SMC) and the access stratum security mode configuration (AS SMC) AS improved security configuration processes.
Regarding claims 2, 6, note ¶155-162.
Regarding claims 4, 8, since these claims are stating non-functional subject matter and adds no structure note paragraphs 3 and 4 above.
Regarding claim 5, this is the inherent apparatus version of the method claim since this claim states the same functions and is rejected for the same reasons as stated above. Also note figure 1B #118, 130, 132, 120 for the processing circuitry, memory and transceiver.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Claim(s) 3 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication 2016/0374104 (Watfa, et al) in view of “Key Hierarchy When Using UP Security Function” ZTE, 3GPP TSG A WG# (Security) Meeting #87, May 19, 2017 or KR 10-2017-0038096 as applied to claims 3 and 7 above, and further in view of United States Patent Application Publication 2010/0173610 (Kitazoe, et al).
Watfa, et al in view of ZTE and KR 10-2017-0038096 disclose all subject matter, note the above paragraphs, except for transmitting a key change indicator to the user equipment in a radio resource control (RRC) connection reconfiguration message. Kitazoe, et al teaches the use of transmitting a key change indicator to the user equipment in a radio resource control (RRC) connection reconfiguration message for the purpose of facilitating handling a new access stratum (AS) key available at a serving access point before and/or while preparing a target access point during an inter-cell handover, note ¶19, 89, 94, etc. Hence, it whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains to incorporate the use transmitting a key change indicator to the user equipment in a radio resource control (RRC) connection reconfiguration message for the purpose of facilitating handling a new access stratum (AS) key available at a serving access point before and/or while preparing a target access point during an inter-cell handover, as taught by Kitazoe, et al, in the method performed by a user equipment of Watfa, et al in view of ZTE and KR 10-2017-0038096 in order for the serving access point can receive the new AS key and provide it to the target access point as part of handover preparation.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D CUMMING whose telephone number is (571)272-7861. The examiner can normally be reached Monday - Friday 12 noon to 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony S. Addy can be reached at (571) 272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/ Primary Examiner, Art Unit 2645
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